IP Newsflash

Evaluating whether a patent claim is sufficiently “definite” under 35 U.S.C. § 112 requires looking beyond just the claim language itself. The Federal Circuit reaffirmed this fundamental principle in a recent decision overturning a district court’s overly-narrow indefiniteness analysis.

A recent initial determination at the U.S. International Trade Commission (ITC) determined that claims directed to semiconductor chips with no lower bounds for recited gate pitch and width ranges (e.g., “less than or equal to about [X] nanometers”) were not enabled under 35 U.S.C. § 112. Specifically, it found that a person of ordinary skill could not practice the full scope of the claims, in particular at the lower bounds of the recited ranges, without undue experimentation.

The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the challenged claims to be indefinite. The court noted that IPXL-type indefiniteness at issue (claiming both an apparatus and a method of using the apparatus) does not necessarily prevent the Board from also deciding anticipation or obviousness. The court affirmed that the Board cannot cancel challenged claims for indefiniteness. The court reversed the Board’s determination that the claim term “digital processing unit” was a means-plus-function term and indefinite.

Because “the asserted grounds of unpatentability for [the disputed] claim [] in this case [were] based on prior art, not indefiniteness[,]” the Patent Trial and Appeal Board (PTAB) upheld the validity of a claim over petitioner’s prior art, despite the PTAB knowing that a district court had found the claim indefinite and that, because of that indefiniteness, the petitioner could not point to anticipatory structure in the prior art reference.